Milmet Oftho Industries & Ors. v. Allergan Inc.

Relevant Acts and provisions

Trade and Merchandise Marks Act, 1958

Section 27(2)

Provisions considered: Common-law passing off preserved by Section 27(2) of the Trade and Merchandise Marks Act, 1958.

Brief facts

Allergan Inc., a United States pharmaceutical company, sued Milmet Oftho Industries, an Indian manufacturer, for passing off over a mark used for an eye-care medicinal preparation. Allergan claimed first use abroad since 1992 and a pending Indian registration; Milmet had adopted and used the same mark in India from 1993 with local drug-control approval. The trial court vacated an interim injunction, holding Milmet was first in the Indian market, but the Calcutta High Court reversed, restraining Milmet on the ground that Allergan was first to adopt the mark internationally.

Issues before the Court

1. Can prior use of a mark in the world market, without any sale in India, defeat a domestic trader's later adoption and use of an identical mark in India?
2. Must courts apply heightened scrutiny to deceptive similarity between marks used on medicinal products?

Court's findings

The Court observed that in cases involving medicinal products, exacting judicial scrutiny of deceptive similarity is warranted because confusion between drugs can cause serious harm, and that physicians and pharmacists are not immune from mistake. The Court noted that medicine had become an international field, with practitioners keeping abreast of global developments through literature, conferences and advertising, so a product could acquire a worldwide reputation even without sale in every country.

The Court held that the mere fact that a foreign proprietor had not used its mark in India would be irrelevant if it was genuinely first in the world market.

The Court cautioned, however, that multinational corporations with no genuine intention of entering the Indian market should not be permitted to obstruct a domestic company that had honestly adopted and developed its own mark and was first in the Indian market; the ultimate test remained who was first in the market. It declined to disturb the High Court's interlocutory conclusion but left the question of priority in adoption open for determination on evidence.

Decision

Appeal disposed of; the interim injunction against the Indian appellant was continued, with directions to expedite trial on the issue of priority of adoption.

Cases cited

• N.R. Dongre v. Whirlpool Corporation, (1996) 5 SCC 714

Authorities referred to in the decision. Please verify each citation in the judgment itself.

Keywords

Deceptive Similarity Passing Off Pharmaceutical Trademark Prior User Transborder Reputation